DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of the Claims
Claims 1-8 remain pending and under current examination.
Withdrawn Objections and Rejections and Response to Arguments
Applicant’s arguments filed 3/24/2026 (hereafter, “Remarks”) have been fully considered and are addressed as follows.
The objections to claims 1, 2, 4-6, and 8 are withdrawn, and Applicant’s argument on page 2 of Remarks to this effect is persuasive.
Regarding the rejections of all claims under 35 U.S.C. 112(b), the issues outlined in the non-final Office action mailed 1/8/2026 have not been resolved; accordingly, the rejections are maintained as applicable and detailed below. Any resolved issues including the issue of the unclear tilde symbol have been removed from the body of the maintained grounds of rejection.
Regarding rejections under 35 U.S.C. 112(b), Applicant asserts on page 4 of Remarks that there is written description (i.e., antecedent basis) for the claimed element which is 253 peptides, and asserts further that “the answer is a responding yes because the specification provided the basis with the proper disclosure”. In reply, Applicant’s assertion has been considered but is not persuasive in view of the specific claim language at hand as outlined in the rejections of record. Further, it is noted that Applicant’s arguments pertaining to written description are different than what would be arguments pertaining to indefinite claim language. Applicant cites a declaration accompanying remarks, however it is not apparent that the declaration has been filed under 1.132. It is further noted that there is no “declaration” coded document in the file wrapper with submissions dated 3/24/2026. Nevertheless, the inventor’s statement which accompanies Applicant’s reply is noted but is not persuasive in view of the preponderance of evidence in the record as well as the established reasons outlined in the record. For instance, the antecedent basis issues have not been resolved regarding leaf surfaces, and the term “hot weather” remains subjective and variable.
Returning from the inventor’s statement to Applicant’s remarks in the file wrapper, the hot weather claim language remains problematic as it is a subjective term as detailed in the record. Accordingly, the rejections under 35 U.S.C. 112 are maintained as detailed below.
New Rejections Necessitated by Amendments of 3/24/2026
Claim Rejections - 35 USC § 112(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 2, 4, 6, and 8 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 2, 4, 6, and 8 recite the limitation "the tomato plant’s leaf surfaces" at the end of each claim. There is insufficient antecedent basis for this limitation in the claim. While “the tomato seedlings” as recited in the last line of claims 1 and 5 is understood as antecedent to “the tomato plants” themselves (such as in claims 3 and 7 for instance), there is no antecedent basis for leaf surfaces themselves since seedlings do not necessarily have leaves. Appropriate clarification is required.
Maintained Rejections
Claim Rejections - 35 USC § 112(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-8 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 1 and 5 each recite the limitation "at least 253 peptides as listed in the specification". There is insufficient antecedent basis for this limitation, specifically “as listed in the specification”, in the claim. Limitations are not imported from the specification into the claim.
Claims 1 and 5 recite “the combination of peptides” and then in reference to this apparently recites “the combination”. There is insufficient antecedent basis for these terms. It is unclear what are the parts and the whole being referenced What or which combination of peptides constitutes a numerator and is the denominator a KHP solution?
Claims 1 and 5 recite “under hot weather condition” in line 2 of each claim. What constitutes a hot weather condition? What temperature and/or duration and/or humidity parameter would meet the claim. As written, what constitutes hot weather is subjective and variable from one artisan’s opinion to another.
Appropriate clarification is required. Claims 1 and 5 recite problematic language as outlined above; claims 2-4 and 6-8 are rejected here since they depend from and therefore require all limitations of a rejected base claim.
Withdrawn Rejections and Response to Arguments – Double Patenting
Applicant’s terminal disclaimer filed 3/24/2026 has been approved as noted 4/6/2026 in the file wrapper. The approved terminal disclaimer disclaims terms over claims in patent application no. 18/389,780. Accordingly, the double patenting rejection over this patent application is withdrawn.
Applicant’s remarks at page 4 state that “Applicant hereby provided the Terminal Disclaimers (PTO/AIA /25) for the co-pending applications”, however no terminal disclaimers over any application other than 18/389,780 appear presented or approved in the record. Accordingly, the following double patenting rejections are maintained at this time, and Applicant’s assertion that the claims are in condition for allowance is premature.
Maintained Rejections
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-8 provisionally are rejected on the ground of nonstatutory double patenting as being unpatentable over claims (“B” in Table below) as listed in the table below in copending Application Numbers (“A” in Table below) as listed in the table below(reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims pertain to a method of using a keratin hydrolysis peptide (KHP) solution by preparing a solution from mixing feathers and water in a sealed container, hydrolyzing said mixture according to specific time, pressure, and duration parameters, and using a mass spectrometer to confirm peptide content, and administering the solution to soil and/or to leaf surfaces of specified plants (“C” in Table below).
The instant claims differ from the copending claims in that (1) both claim sets have slightly different but still qualitatively similar numerical amounts with regard to mass of feathers, water content percentage, and hydrolysis temperature, pressure, and duration terms and (2) the instantly claimed method applies the solution to soil around tomato plants by infusion to the soil and/or an intended spray to plant leaf surfaces, whereas the copending claims are drawn to methods of applying the solution to the soil and/or leaves of the plants, specified particularly in the table below.
It would have been prima facie obvious to one of ordinary skill in the art at the time the invention was filed to adjust the hydrolysis conditions as part of routine optimization procedure as is customary in the art, with a reasonable expectation of success. One would have been motivated to do so to achieve the desired degree of hydrolysis reaction efficacy in a method of preparing a peptide solution from feathers in aqueous solution based on the copending claims’ suggestions of hydrolysis reactions for preparing keratin hydrolysis peptide solutions for enhancing crop yields and quality. Further, it would have been prima facie obvious to one of ordinary skill in the art at the time the invention was filed to substitute one for the other, the tomato crop instantly claimed for and/or in place of the crops of the copending claims as detailed in the Table above, with a reasonable expectation of success. One would have been motivated to apply the prepared solution to soil and/or leaves of alternate food or cash crops to achieve similar end results of enhanced production yield and quality of said food or cash crops.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
No claim is allowed at this time. Applicant’s arguments on pages 4-5 of Remarks are noted, however Applicant’s statement that “Just because said near-arts mentioned keratin solution/hydrolysis do NOT make them near-art…” is noted but not helpful to advance prosecution at this time. The examiner maintains positions outlined in the conclusion section of the non-final Office action mailed 1/8/2026.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AUDREA B CONIGLIO whose telephone number is (571)270-1336. The examiner can normally be reached Monday - Thursday 7:00 a.m. - 5:30 p.m..
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Hartley can be reached at 5712720616. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AUDREA B CONIGLIO/ Primary Examiner, Art Unit 1617
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